India: Common Words And Phrases Must Satisfy A Minimum Degree Of Distinctiveness To Get Exclusivity Protection.

Last Updated: 25 July 2011
Article by Sonam Lhamu Bhutia

Sunstar Overseas Ltd (Plaintiff) v Rameshwar Dass Garg (Defendant), was a suit for permanent injunction alleging trademark infringement and passing off, etc.

Sunstar Overseas, the Plaintiff in this case claimed ownership of the mark "ALISHAN", they further stated that they had been using the said mark extensively and continuously since 2004, in respect of processed rice and also in the course of trade including export trade. Another contention was that the "ALISHAN" mark had a strong association with the Plaintiff, and in connection with those products or goods marked by it.

Towards the abovementioned end, the Plaintiff submitted documents which included photographs of packaging material and copies of invoices. The Court had granted an ex parte injunction against the Defendants on 11.09.2009. The Plaintiff on becoming aware of the Defendant's use of the mark "AALISHAN", from a trademark registration advertisement, complained that such use by the Defendant in respect to similar products i.e. rice, maida, suji, salt and other condiments would result in confusion, as to their origin, which would be prejudicial to the Plaintiff. A notice of opposition was filed by the Plaintiff against the registration of the Defendant's mark, which is still pending.

The Defendant responded contending that they are bona fide user of the mark "AALISHAN" from 04.01.2002 in an artistic manner and also that the Plaintiff's were well aware of such use and the defendant's proprietary rights. The Defendant pointed out that the Plaintiff's application for "ALISHAN" in 2004 which was granted, was based on a "Proposed to be used" basis rather than a "user" basis. Further, it was pointed out that other materials on record also revealed the fact of the Plaintiff never having used the mark "AALISHAN" as was claimed in the suit.

The Court observed that the rival marks "AALISHAN" and "ALISHAN" were phonetically similar to the point of identity. The term "AALISHAN" in hindi means "magnificent". The Court further stated that although there was no doubt that the mark was arbitrary, but at the same time it was also a common word, and in such an event the user of the mark had to establish a fair degree of secondary meaning or acquired distinctiveness of that mark in respect of the product. The question before the Court was to establish whether the Plaintiff's claim of acquired distinctiveness was in fact true.

The Court stated that it was in fact undisputable that the Plaintiff was the owner of the registered trademark "ALISHAN". The question therefore was whether the Defendant was a bona fide prior or concurrent user or adopter of the similar "AALISHAN" mark. It was noted that the invoices produced by the Plaintiff contained some semblance of the description "ALISHAN" product and related to the period 2006 onwards, and there was no material to substantiate usage of the mark prior to that time. The fact that both the parties were involved in the same trade made the Plaintiff's claim of ignorance and becoming aware of the Defendant's use only in 2008 unbelievable. A very significant fact pointed out by the Court was that a trade directory of 2009 and publication Grain Mirror 0f 2007-2008, both contained the Defendant's "AALISHAN" and the description of Plaintiff's product- not "ALISHAN" but "HALO". There was not a single advertisement in any newspaper or trade journal or directory of the Plaintiff's mark.

In Biswaroop Roy Choudhary v. Karan Johar; Standard Ideal Co. v Standard Sanitary Mfg. Co.; and Britannia Industries Ltd v Cremica Agro Foods Ltd, Courts had held that in order for protection of exclusivity for common words and phrases , the Court must be satisfied that there is a minimum degree of acquired distinctiveness established form the record. In the present case, the Court found no such acquired distinctiveness and thus dismissed the Plaintiff's application of injunction and the previous ex parte injunction was vacated.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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